The Complainant is Yvette Vignando, Happychild Pty Ltd, New South Wales, Australia, self-represented.
The First Respondent is Frances Jones of H Pty Ltd, and the Second Respondent is Morgan Creative Pty Ltd of Sydney, New South Wales, Australia, represented by Spruson & Ferguson Lawyers, Australia. 2. The Domain Names and Registrars
The disputed domain names and are registered, respectively, with Network Solutions, LLC and Distribute.IT Pty Ltd.
The domain name is registered in the name of the First Respondent and the domain name is registered in the name of the Second Respondent. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2011. On May 18, 2011, the Center transmitted by email to Network Solutions, LLC and Distribute.IT Pty Ltd. a request for registrar verification in connection with the disputed domain names. On May 19, 2011, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant of the first domain name in dispute and providing the contact details. On May 26, 2011, Distribute.IT Pty Ltd. transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant of the second domain name in dispute and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the First Respondent of the Complaint, and the proceedings commenced May 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response June 15, 2011. The Response was filed with the Center on June 15, 2011.
The Center appointed Debrett G. Lyons, Warwick A. Rothnie and Fleur Hinton as panelists in this matter on July 11, 2011. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
As the Panel required further time to consider and decide upon all the issues, it requested and was granted extensions of time until August 22, 2011.
The Panel considered whether the disputed domain name was properly included in the Complaint because that domain name is not apparently held by the First Respondent but by the Second Respondent. Emails from officers of the Second Respondent on May 24 and May 26, 2011 stated that it had registered the second disputed domain name on behalf of the First Respondent as part of its function as the First Respondent’s service provider and directed all further communications in the matter to the First Respondent or her solicitors. On consideration, therefore, the Panel finds that the Second Respondent holds the registration for the domain name on behalf of the First Respondent. The Panel finds, therefore that the domain name is properly included within the Complaint and, for the purposes of application of the Policy, the Panel where necessary ascribes the Second Respondent with the First Respondent’s motives. 4. Factual Background
The Complainant registered the domain name on July 31, 2007 and has an Australian trade mark registration for HAPPY CHILD dated March 20, 2008. The Complainant describes herself as an executive coach who specializes in children’s emotional intelligence. Her website contains a variety of information on dealing with children’s problems and needs. It invites Internet users to subscribe to an online newsletter and has a blog for parents to share experiences. The Complainant also offers coaching and workshops to children, government and corporate clients.
First Respondent is a psychotherapist who specializes in children’s issues. She has used the social networking resource, Facebook, since July, 2009 to post articles and links to other material on the Internet. She made herself known to the Complainant on July 13, 2009 by email to the Complainant’s website. The First Respondent told the Complainant that the First Respondent believed that they had a lot in common with each other. Subsequent to that the Complainant and First Respondent met on several occasions in August and November, 2009. They continued to see each other in 2010 from time to time.
In May, 2010 the First Respondent informed the Complainant that the First Respondent had registered the domain name . She also sought the Complainant’s consent to her registration as a trade mark of HAPPY CHILDREN. She gave to the Complainant as her reason for seeking consent, the fact that the First Respondent’s then lawyers had advised her that she needed the Complainant’s consent because of the Complainant’s trade mark registration. The Complainant refused consent and the First Respondent now denies that any consent was necessary. The First Respondent’s Australian trade mark application 1375408 HAPPY CHILDREN in class 44 for “Lifestyle counseling (psychological); provision of information relating to psychology; psychological counseling; psychotherapy; services of a psychologist was accepted for registration on December 2, 2010. Registration of the trade mark has been opposed by the Complainant.
The Complainant petitions the panel to order transfer of the disputed domain names from the respective Respondents to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the domain names and are confusingly similar to the Complainant’s registered trade mark HAPPY CHILD because the disputed domain names incorporate the trade mark in its entirety. The Complainant argues that the addition of generic or descriptive terms including plurals or top level domain indicators do not affect the determination of the issue of confusing similarity.
The Complainant states that the First Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s use and registration of the trade mark HAPPY CHILD predates the registration of the disputed domain names and the First Respondent’s use of the trade mark HAPPY CHILDREN..
The Complainant has not licensed the First Respondent to use the disputed domain names. Indeed, the Complainant expressly refused consent to that use when the First Respondent requested her consent.
The First Respondent is not commonly known by the name “Happy Children”. On her Facebook page she is identified by the name “Magic Stars”. Although the First Respondent has now registered the company name Happy C Pty Ltd, this does not mean that the First Respondent’s business is known by that name. Further, the company was registered after the disputed domain names and after the Complainant had made the First Respondent aware of the Complainant’s objection to the use of the disputed domain names.
The Complainant argues further that the First Respondent has not made any bona fide use of the domain names and that the acquisition of the disputed domain names was an attempt to derive benefit from its close resemblance to the Complainant’s trade mark.
The Complainant states that the First Respondent’s registration and use of the domain names was in bad faith and in that the Complainant, by using the domain names, has intentionally attempted to attract, for commercial gain, Internet users to her web site or other online location, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the First Respondent’s website or location or of a product or service on the First Respondent’s website or location. B. First Respondent
The First Respondent contends that the disputed domain names are not confusingly similar to the Complainant’s trade mark. The Complainant’s trade mark registration for HAPPY CHILD carries an endorsement that it was registered pursuant to the provisions of section 44(3)(b) of the Trade Marks Act (Cth) 1995.
This section applies in a case where the Registrar of Trade Marks considers that there is reason to reject a trade mark on the basis of a substantially identical or deceptively similar trade mark covering the same or similar goods or services with an earlier priority date. The applicant may take steps to overcome the objection by demonstrating that, in spite of the earlier trade mark, there are circumstances which make it proper for the Registrar to register the trade mark. As a result of this endorsement, the First Respondent contends, the validity of the registration is qualified. In addition, the First Respondent points to section 122 of the Trade Marks Act (Cth) 1995. This section states that a registered trade mark will not be infringed where: a person uses his own name in good faith; uses a “sign” in good faith to indicate kind, quality or some other characteristic of the goods or services; or where a court considers that the person would obtain registration of the trade mark if he were to apply to register it.
This is applicable here, the First Respondent argues, because the First Respondent’s own trade mark has been accepted by the Registrar of Trade Marks in the face of the Complainant’s registration for HAPPY CHILD. Also, there are other Australian trade mark registrations incorporating either “HAPPY CHILD/CHILDREN” or names which are very similar to that.
Further, the trade mark HAPPY CHILD is very descriptive and its use by the Complainant is not such which would enable it to develop a substantial reputation. The distinctive element, the First Respondent says, relates to the Complainant herself. Therefore the Complainant does not have rights in a trade mark sufficient to form the basis of a complaint. In any event, the disputed domain names are not confusingly similar to the trade mark. In support of this the First Respondent refers to the decision in CaptTn Snooze Management Pty Limited v. Domains 4 Sale,WIPO Case No. D2000-0488. In that case the complainant had a number of trade mark registrations in various countries incorporating “SNOOZE”. However, only one of the trade marks was for “SNOOZE” on its own. The disputed domain name was which had been registered by the respondent before the priority date of the trade mark for “SNOOZE” per se. The First Respondent has quoted in support of her case the following:
“It is acknowledged that the word “snooze” may not necessarily fit with the category of words which are inevitably and on their face generic and/or highly descriptive. However, in the Panel’s view “snooze” is to a degree descriptive and in this respect the First Respondent’s claim that it has merely registered a common word or phrase, which has its own inherent commercial value cannot be simply rejected and must be given some weight. Likewise, the onus rests on the Complainant and in the final analysis it is felt that the Complainant has not done enough to shift it.”
The First Respondent argues that her situation is analogous to that in CaptTn Snooze Management Pty Limited v. Domains 4 Sale, supra, and that it supports the argument that the disputed domain names are not confusingly similar to the trade mark.
The First Respondent contends that she does have rights and legitimate interests in the disputed domain names.
The essential element of the domain names is “happychildren” and no one trader can monopolize this expression.
The Australian Trade Marks Office has accepted the First Respondent’s application for HAPPY CHILDREN without having raised the Complainant’s trade mark registration for HAPPY CHILD as a citation.
The First Respondent is a qualified psychotherapist who offers counseling services in respect of children’s issues. The First Respondent therefore has a right to use the disputed domain names in relation to services which have as their goal the creation of happy children.
The First Respondent has a legitimate interest in the company name which has been registered by the First Respondent, H Pty Ltd.
The First Respondent applied for registration of the trade mark HAPPY CHILDREN for the services she offers and the application was accepted although it has been opposed by the Complainant.
The First Respondent cites the decision of Tightrope Media Systems Corporation v. DomainC,WIPO Case No. D2006-0446, “The registration of common words as domain names, and the posting of advertising or hyperlinks relevant to that common word, can be a legitimate interest if the advertising and links are clearly and directly related to the common word”.
Although the First Respondent has not developed her website yet, she has used the disputed domain names in many other places on the Internet such as Facebook and her Twitter account.
The use by the First Respondent of the disputed domain names is not sufficient to indicate a connection with the Complainant and the First Respondent offers services not offered by the Complainant and which the Complainant is not authorized to offer.
In addition the expression “happy children” is one which others already use.
Therefore the First Respondent has rights and legitimate interests in the disputed domain names.
The First Respondent contends that the registration of the disputed domain names was made in good faith and that they are being used in good faith.
The disputed domain names were chosen by the First Respondent as the result of her consultations with an online marketing expert in order to maximize results with the Google keyword tool.
The fact that the First Respondent had known of the Complainant and her activities and had also known of the Complainant’s refusal to grant consent to use of the disputed domain names does not have the consequence that the disputed domain names were registered and are being used in bad faith because it is not necessary for anyone to request consent to use “Happy Children”.
The First Respondent has not used the disputed domain names in any way which would confuse the public. Further, the First Respondent is not aware of any instances of confusion between the Complainant and the First Respondent.
The First Respondent has not registered and is not using the disputed domain names in bad faith. 6. Discussion and Findings
In order to be successful in having a domain name transferred or cancelled, a complainant must satisfy the Panel that all three elements of the UDRP policy have been satisfied, that is, that:
i the disputed domain name(s) are identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
ii the First Respondent has no rights or legitimate interests in respect of the domain name(s); and
ii the domain name(s) has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain names are identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights.. The Complainant’s registered trade mark HAPPY CHILD is entirely encompassed within the disputed domain names. The First Respondent argues that, in the present case that is not sufficient to satisfy the first criterion. The First Respondent relies on the fact that the Complainant was only able to obtain registration for the trade mark HAPPY CHILD by overcoming an objection by the Trade Marks Office based on a substantially identical or deceptively similar trade mark. The Panel finds the fact that the Australian Trade Marks Office raised an objection to registration of the trade mark HAPPY CHILD which was subsequently overcome is not a ground for finding that the rights granted by the trade mark registration are qualified so as to exclude it from being used as a basis for this Complaint.
The First Respondent also argues that section 122 of the Trade Marks Act (Cth) 1995 is relevant here. That section provides, inter alia, that trade mark infringement will not occur where the use by a person of his own name in good faith, the use of a “sign” in good faith to indicate kind, quality or some other characteristic of the goods or services, or where a court considers that the person would obtain registration of the trade mark if he were to apply to register it. This latter criterion has been proved satisfied because the Registrar has granted acceptance of the application. This is not a case of trade mark infringement and the Panel finds that the provisions of section 122 of the Trade Marks Act (Cth) 1995 are irrelevant to this case. Prima facie the Complainant has a valid trade mark registration. The Panel does not have the power to make any findings regarding the validity of that registration.
The First Respondent further contends that the fact that the trade mark HAPPY CHILD is so descriptive has the effect that it will never be able to develop a substantial reputation and that the rights in the HAPPY CHILD trade mark are associated with the Complainant herself. For that reason, the First Respondent disputes that the Complainant has rights sufficient in the trade mark HAPPY CHILD to form the basis of this complaint. This argument is based on CaptTn Snooze Management Pty Limited v. Domains 4 Sale, supra. However, the Panel finds that that case is distinguishable from the present. Only one of the trade marks relied on by the Complainant was for “SNOOZE” on its own. The disputed domain name was . It was registered by the respondent before the priority date of the trade mark for “SNOOZE” per se.
The Panel finds that the disputed domain name is confusingly similar to the trade mark HAPPY CHILD. Each of the disputed domain names encompasses “happychildren”. In the decision in SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L,WIPO Case No. D2008-0792 referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the trade mark was MYHOSTING and the disputed domain name was . The Panel referred to previous decisions to the effect that when a disputed domain name incorporates a distinctive trade mark in its entirety, there is sufficient similarity between the trade mark and the disputed domain name to render the latter confusingly similar. This is an objective test. In this case, the disputed domain name is merely the plural of the trade mark. B. Rights or Legitimate Interests
The Complainant has not licensed the First Respondent to use the disputed domain name. The evidence demonstrates that the First Respondent was aware of the Complainant’s use of the trade mark HAPPY CHILD and of its registration prior to her registration of the disputed domain name and her registration of the company name.
The First Respondent’s arguments on this issue depend on the argument that no one can monopolize so descriptive a term as “happy children”. The First Respondent relies also on the acceptance by the Australian Trade Marks office of H Pty Ltd’s class 44 application for HAPPY CHILDREN in respect of services which are different from those covered by the Complainant’s HAPPY CHILD registration.
However, there are differences between trade mark registration and domain name registration. In the former, the registered owner acquires a monopoly of a trade mark in relation to particular goods and services. A domain name registration does not give a monopoly right. No one can take action against a third party purely on the basis that he is a registrant of a domain name. It is difficult to see how a domain name registrant can have rights or legitimate interests in a domain name which is confusingly similar to a registered trade mark whose priority date is earlier than the date of the domain name registration unless the domain name registrant has earlier common law rights in the trade mark which is the domain name or can satisfy one of the factual circumstances set out in paragraph 4 (c) of the UDRP policy. This is particularly so where a respondent has been aware of the complainant’s trade mark forming the basis of the complaint and of the complainant’s activities.
The Panel finds that the First Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Section 4(b) of the UDRP policy sets out the factors which may be evidence of registration and use in bad faith of a domain name. Those factors are not exclusive. The only one which could be relevant here is 4(b)(iv) which states that a person may have registered and be using a domain name in bad faith if the person has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the person’s web site or location or of a product or service on the person’s web site or location.
The First Respondent was aware of the Complainant and of her use of the trade mark HAPPY CHILD. On March 3, 2010 the First Respondent consulted an online marketing expert for advice on how to maximize results from the Google keyword tool. He advised that her then name “Magic Stars” was not going to be very successful in this endeavor and, and explained to her how to use Google’s Keyword tool from its AdWords program to help her identify better options. The First Respondent then undertook searches using the Keyword tool and considered the results as well as the availability of domain names.
The First Respondent states that she then settled on “happy children” and acquired the registration for the first disputed domain name at auction.
The First Respondent sent an email to the Complainant on May 3, 2010 saying that she had been advised by her lawyers that she needed the Complainant’s consent to use the disputed domain name. The Complainant refused consent. The First Respondent then went on to register the company name H Pty Ltd.
On August 1, 2010 she lodged 6 trade mark applications with the Australian Trade Marks Office for HAPPY CHILDREN in classes 9, 16, 35, 38, 41 and 44. All of these were rejected except for the class 44 application which sought registration for “Lifestyle counseling (psychological); provision of information relating to psychology; psychological counseling; psychotherapy; services of a psychologist”. Its registration has been opposed by the Complainant.
Under all of these circumstances there is no doubt that the First Respondent knew of the Complainant, her activities and her trade mark HAPPY CHILD. However this does not, of itself, necessarily indicate that she registered and is using the disputed domain name in bad faith. Whether or not someone has acted in bad faith must involve a subjective question of intent. However, it is easy for a respondent to say that he did not act in bad faith so something more is needed in order to determine the bona fides of a respondent. The Panel finds that the appropriate test is “is it credible in all of the circumstances that the respondent’s activities were and are undertaken in good faith?”
There is no indication that the First Respondent has had, or has, any intention of attracting people to her website by causing confusion with the Complainant’s website. The fact that her (then) lawyers advised her that she needed the Complainant’s consent and that she subsequently ignored that advice and received other advice is not evidence of bad faith. The fact that the First Respondent ignored the Complainant’s wishes is not evidence of bad faith since she did not owe any duty to the Complainant.
The First Respondent believes that the two names, “happy child” and “happy children” are descriptive and that the Complainant does not have the right to prevent her from using “happy children” or the disputed domain name. In addition, the Trade Marks Office has accepted for registration her application for HAPPY CHILDREN as a trade mark in respect of services which, on paper, appear dissimilar to those offered by the Complainant. That there is something of a conflict between these two positions is not something which a lay person could be expected to appreciate.
The First Respondent expressly denies registering the disputed domain names with any intention of taking advantage of the Complainant’s trade mark or goodwill. Having regard to the First Respondent's apparently genuinely held view that the two expressions at issue in this dispute, “happy child” and “happy children”, are descriptive, the parties’ respective fields of activity and the other considerations referred to above, that denial is not objectively implausible.
The Panel finds that the First Respondent did not register and is not using the disputed domain names in bad faith. 7. Reverse Domain Highjacking
The First Respondent requests a finding of reverse domain name hijacking against the Complainant. This request appears to be predicated, first, on the Complainant’s previous threat to sue which has not been acted on and, secondly, on the First Respondent’s view that the Complainant failed to commence proceedings as she must have realized she had no prospects of success.
The Policy was put in place to provide a quick and, compared to court proceedings at least, cost-effective means for the resolution of disputes about the registration of certain types of domain names. In those circumstances, a complainant can hardly be criticized for bringing a complaint under the Policy instead of initiating court proceedings.
The Panel would not find that the Complaint has been brought in bad faith warranting a finding of reverse domain name hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
Debrett G. Lyons
Presiding Panelist
(Dissenting)
Warwick A. Rothnie
Panelist
(Majority)
Fleur Hinton
Panelist
(Majority)
Dated: August 17, 2011 Warwick Rothnie – Concurring Majority Opinion
Having regard to the nature of the Complainant’s trademark, the nature of the First Respondent’s services, the aptness of the disputed domain name to describe those services and the circumstances outlined above, I do not think the First Respondent’s denial of any intention to take advantage of the Complainant’s trademark is inherently implausible. In these circumstances, I concur in the Panel’s decision that the Complaint should be denied. I join in the conclusions that the disputed domain names were not registered in bad faith and that there should not be a finding of reverse domain name hijacking.
I readily accept that, as the Complainant is the owner of a registered trademark in Australia, the Complainant has clearly established trademark rights sufficient for the purposes of the Policy and it is not the role of a panel under the Policy to question the validity of that registration. A term or expression which is part of ordinary or common English usage and which forms part of, or is, a registered trademark, however, will usually only confer very limited protection and often a very precise correspondence will be required for its infringement especially in a case such as the present where the terms in issue are not inapt for the products in issue. This case at the least falls very close to that line. Given the conclusion on bad faith, however, it is not necessary to decide finally that question or whether the First Respondent has rights or legitimate interests.
Warwick A. Rothnie
Panelist
(Majority)
Dated: August 17, 2011 Debrett Lyons– Dissenting Opinion A. Identical or Confusingly Similar
I join in the conclusions that the Complainant has rights in the trade mark HAPPY CHILD acquired through registration and that the disputed domain names are confusingly similar to the Complainant’s trade mark.
In reply to the First Respondent’s contention that the terms are all composed of generic words I would add the comment that the consensus of former decisions under this aspect of the Policy has been to consider the issue of the generic or descriptive character of a complainant’s mark and/or the relevant domain names under paragraph 4(b) or (c) of the Policy and not under paragraph 4(a). B. Rights or Legitimate Interests
I join in the conclusion that the First Respondent has no rights or legitimate interests in the disputed domain names C. Registered and Used in Bad Faith
I express my dissent from the majority viewpoint that the disputed domain names were not registered in bad faith. Having primary regard to the following facts which are established by the evidence:
that by her actions it is shown that the First Respondent knew of the Complainant’s trade mark and business before the disputed domain names were registered;
that prior to registration of the disputed domain names the First Respondent was using an altogether different trading or business name, “Magic Stars”, in connection with services having a close nexus with the services provided by the Complainant ;
that prior to registration of the disputed domain names the First Respondent was given independent advice that the name “Magic Stars” was an inadequate vector for attracting internet traffic to her website;
that the First Respondent failed to disclose the existence of at least the domain name to the Complainant over the course of extended friendly commercial discussions between the parties;
I find that it is more likely than not that the First respondent registered the disputed domain names in bad faith. Moreover, having primary regard to the following facts which are established by the evidence:
that the First Respondent was given professional legal advice to seek consent to use of the trade mark HAPPY CHILDREN from the Complainant;
the First Respondent acted in accordance with that advice;
that consent was categorically refused;
the First Respondent persisted in her attempt to register the trade mark HAPPY CHILDREN;
on official examination of that trade mark by IP Australia, formal objections were raised founded on the Complainant’s prior trade mark HAPPY CHILD;
the trade mark HAPPY CHILDREN was applied for in the name of a quasi-identical Australian company name which the First Respondent had incorporated;
I find that it is more likely than not that the First Respondent used the disputed domain names in bad faith.
In the alternative, I find that the First Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. My decision would be to allow the Complaint since, in my opinion, all three elements of the Policy have been established.
Debrett G. Lyons
Presiding Panelist
(Dissenting)
Dated: August 17, 2011
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